Monday, August 21, 2017

The TTAB affirmed three refusals to register the design shown below, comprising a "three-dimensional cylindrical cast of female breasts and torso," for associational, educational, and fund-raising services related to breast cancer awareness, finding that (1) applicant's specimens of use fail to show the applied-for-mark in use with the recited services, (2) the design fails to function as a service mark, and (3) assuming arguendo that the first two refusals were overcome, it constitutes nondistinctive trade dress that lacks acquired distinctiveness. In re Keep A Breast Foundation, 123 USPQ2d 1869 (TTAB 2017) [precedential] (Opinion by Judge Peter W. Cataldo).

Specimens of Use: "A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage." In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008). Applicant's original specimen of use, shown immediately below, gave no indication of the services involved.

Its first substitute specimen, shown in part immediately below, does not display the breast cast depicted in the application drawing, but rather six different breast casts. Applicant's own promotional materials state that these breast casts are "one-of-a-kind plaster forms of the female torso ... given to the castee to document a specific point in their breast cancer journey." The casts are individual works that lack uniformity and thus they fail to depict a "substantially exact representation of the mark." See Rule 2.51.

Furthermore, although this specimen refers to the services, it appears to identify the services by the more traditional word mark "The Keep A Breast Foundation:" i.e., the presence of other readily perceived source identifiers "makes it impossible to conclude that the public would perceive the casts themselves as source identifiers."

A second substitute specimen (above) displays five breast casts of different sizes and shapes on a table with other paraphernalia. Again there is no mention of or association with the recited services. This specimen neither depicts the design shown in the application drawing, nor does it associate the supposed mark with any services such that the breast casts would be perceived as a source indicator.

And so the Board affirmed the refusal on the ground that applicant's specimens fail to show use of the applied-for designation as a source indicator for the recited services.

Failure to Function: The USPTO is statutorily constrained, by Section 1, 2, 3, and 45 of the Trademark Act, "to register matter on the Principal Register only if its functions as a mark." The critical determination is how the proposed mark is perceived by relevant consumers.

The Board agreed with Examining Attorney Marlene Bell that applicant's proposed mark fails to function as a service mark. The specimens of use fail to associate the design with the services, "thus making it unlikely that the relevant consumers will perceive the casts as indicating source."

If anything, the applied-for mark appears to be created as part of the educational and associational services offered under the designation “Keep A Breast Foundation Treasured Chest Program.” As stated in Applicant’s pamphlet, "The Keep A Breast Foundation’s Treasured Chest Program strives to gives women that are newly diagnosed with breast cancer a unique opportunity to document their body and their feelings at a specific time in their treatment by turning their casted torso into a beautiful piece of art."

The evidence also showed that other charitable organizations similarly make breast/torso casts as part of their support services. The Board concluded that the cast will be perceived as part of applicant's services rather than as a source indicator.

Acquired Distinctiveness: If a term or design fails to function as a mark, no amount of evidence of acquired distinctiveness can overcome such a refusal. [Seems like a nonsequitur - ed.]. Nonetheless, for the sake of completeness, and assuming arguendo that the design serves as a source indicator and that the specimens of use are acceptable, the Board considered applicant's Section 2(f) claim.

Given that the alleged mark is not Applicant’s main identifier (Keep A Breast Foundation is), and given that it is in the form of a product, which consumers do not tend to view as marks but as what they are (products), we find Applicant’s use since April 2000 is insufficient, in itself, to demonstrate that consumers perceive the breast/torso cast as an indicator of source.

Applicant pointed to more than $1 million dollars in donations and $100,000 spent on advertising for its services, but that evidence was of minimal probative value because applicant failed to indicate what amounts were raised and spent in connection with the mark at issue. Applicant displays its breast/torso casts along with other potential source identifiers, and promotes its services under the name "Treasured Chest Program." Thus the Board could not infer that, from applicant's advertising, consumers will infer that the breast/torso cast is a source identifier.

Applicant provided declarations attesting that the 1,500 breast casts it has developed include those of numerous celebrities, musicians, and professional athletes, and that media outlets have published stories about "The Keep A Breast Foundation's Breast Casts and the organization's services associated with the Breast Cast campaigns." But there was no indication that the breast cast was displayed or discussed as a source indicator, for example, by way of "look for" advertising. Moreover, the fact that the breast casts differ from one another make it more unlikely that applicant could show that such individualized casts serve as a mark.

In addition, Section 2(f) requires that an applicant's use of a proposed mark be "substantially exclusive." The fact that third parties offer breast casting as part of breast cancer awareness programs "strongly undercuts Applicant's claim that it is making substantially exclusive use of its proposed breast cast configuration as a service mark or trade dress." Therefore, applicant's claim of acquired distinctiveness fails on that basis also.

TTABlog comment: WYHA? Is this like a phantom mark? Is it an attempt to register an idea (breast casting) as a service mark? Applicant called it "akin to packaging," but isn't it some "tertium quid" that is neither product shape nor packaging?